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Sanofi v Parke Davis Pty Ltd (No 1) [1982] HCA 9; (1982) 149 CLR 147 (17 March 1982)

CATCHWORDS

HEARING

DECISION

2. The appellant, Sanofi, a French corporation, is the successor in interest to another corporation which was the registered proprietor of letters patent which expired on 16 October 1979. By s. 90 of the Patents Act 1952 (Cth) as amended, a petition for an extension of the term of a patent may be presented at least six months before the expiration of the term of the patent, or within such further period as the court allows. On 10 June 1980, which was of course after the expiration of the term of the patent, Sanafi applied by notice of motion to the Supreme Court of Victoria for an extension of time to present a petition for an extension of the term of the patent, and on the same day Murray J. ordered that the time within which a petition might be presented be extended to 29 August 1980. A petition was presented on that day, was duly advertised and was heard by Fullagar J. in June 1981. Since no caveat against the extension had been lodged, no person was made a party respondent to the petition under s. 92 of the Patents Act, although the Commissioner of Patents appeared and was heard. On 24 June 1981 Fullagar J. ordered that new letters patent be granted to Sanofi for a term of ten years from 16 October 1979, subject to certain conditions. Before the order had been passed and entered, the present respondent, Parke Davis Pty. Ltd. ("Parke Davis") applied on motion that the order on the petition be not entered pending a further hearing and determination of the petition, and that Parke Davis be made a party respondent to the petition. Fullagar J. dismissed that motion on 30 July 1981, and the order that he had made on the petition was thereupon passed and entered. The new letters patent were sealed on 7 August 1981 and on the same day the order made by the Supreme Court on 24 June 1981 was entered in the Register of Patents. (at p151)

3. On 14 August 1981 Parke Davis filed in the Federal Court an application for leave to appeal from the order made by Murray J. on 10 June 1980 and that made by Fullagar J. on 24 June 1981. On 2 December 1981 the Full Court of the Federal Court made an order in the following terms:
"1. Leave to file and serve within 14 days a Notice of Appeal from the orders of Fullagar J. of 24th June 1981 be granted to Parke Davis Pty. Limited, limited to the grounds:
(a) That an extension of time within which to lodge a petition under s. 90 of the Patents Act 1952 cannot, on the proper construction of the section, be granted on an application filed after the patent has expired.
(b) That, upon the proper construction of the section, an order extending the term of a patent or directing a regrant of a patent for a further term cannot be made under s. 90 of the Patents Act 1952 unless proceedings for extension of the term of the patent are commenced either by petition or by application for extension of time for filing a petition prior to the expiration of the patent.
2. The application by Parke Davis Pty. Limited for special leave to appeal from the order of Murray J. of 10th June 1980 be stood over to the hearing of the limited appeal from the orders of Fullagar J.
3. Subject to (1) and (2) above, the application for special leave to appeal be dismissed.

4. Costs be reserved."

4. By s. 33(4) of the Federal Court of Australia Act 1976 (Cth) as amended, an appeal to this Court may be brought as of right from a final judgment of a Full Court of the Federal Court given or pronounced (inter alia) in any proceedings which involve directly or indirectly a claim, demand or question to or respecting any civil right amounting to or of the value of $20,000 or upwards. It is conceded by Parke Davis that the present proceedings involve such a claim, demand or question. However, it is disputed that the judgment of the Full Court of the Federal Court was a final judgment. (at p152)

5. A final judgment is one which finally disposes of the rights of the parties: Hall v. Nominal Defendant [1966] HCA 36; (1966) 117 CLR 423, at pp 439-440, 443 ; Licul v. Corney [1976] HCA 6; (1976) 50 ALJR 439, at p 444 ; Port of Melbourne Authority v. Anshun Pty. Ltd. (No. 1) (1980) 147 CLR 35, at p 38 ; Carr v. Finance Corporation of Australia Ltd. (No. 1) (1981) 147 CLR 247, at pp 248, 253-254 . It was not suggested that the order of the Federal Court in the present case finally disposed of the rights of the parties under s. 90 of the Patents Act: obviously it did not. What was contended by Mr. Lyons on behalf of Sanofi was that the order of the Federal Court finally determined that Parke Davis had a right to appeal to the Federal Court. The order proceeded on the basis that Parke Davis had a right to apply for leave to appeal, and that it was competent to the Federal Court to grant it leave to appeal. However, it was submitted that Parke Davis had no right to seek or obtain leave to appeal, since it had not been a party to the proceedings in the Supreme Court. It was submitted that a power of appealing is a right, and not a matter of mere procedure, and that the order of the Federal Court finally disposed of that right in the present case. (at p153)

6. There is, as Mr. Handley for Parke Davis submitted, a short and conclusive answer to that contention. The Federal Court did no more than grant leave to file and serve a notice of appeal. It is always open to a court which has granted leave to appeal or special leave to appeal to rescind that grant if it later appears to the court, in the light of further information or argument, that the leave or special leave should not have been granted. That course has been taken by this Court in appropriate cases. The order of the Federal Court therefore did not finally dispose of the right of Parke Davis to appeal, or of the right of Sanofi to hold its judgment free of any possibility of appeal, because the Federal Court might, on reconsideration, rescind the grant of leave. It is irrelevant whether or not it is likely that the Federal Court would make an order rescinding the grant of leave, since it is the legal force of the judgment in question, and not its practical effect, that has to be considered in determining whether or not the judgment is a final one: see Hall v. Nominal Defendant (1966) 117 CLR, at pp 440-441, 444-445 ; Carr v. Finance Corporation of Australia Ltd. (No. 1) (1981) 147 CLR, at pp 248, 256-257 . For those reasons the order of the Federal Court was interlocutory and there was no right of appeal from it to this Court. The objection to competency was accordingly upheld. (at p153)

7. It is not the usual practice of this Court to give reasons for a refusal to grant special leave to appeal, but in the present case there is one aspect of the matter which the Court thinks it proper to mention. Mr. Handley did not oppose the grant of special leave, provided that by some means or another it was made possible to determine the question arising under s. 90 as well as the question whether Parke Davis had a right to appeal to the Federal Court. No doubt the question arising under s. 90 is an important one, and it is a question which, at least in the interests of Parke Davis, ought to be determined as quickly as possible in the present case. However, those considerations do not provide sufficient reasons for departing from the established practice of this Court, which is to refuse special leave to appeal in a case in which an appeal can be taken to a Full Court of the Federal Court (or of a Supreme Court), unless that Court has already decided the very question in another case and is bound, or at least virtually certain, to reach the same conclusion in the instant case. There is no reason in the present case why we should forego the assistance that the judgments of the Full Court of the Federal Court will provide if the matter reaches this Court. Apart from that, it is sufficient to say that the matter is not one in which we consider it appropriate to grant special leave to appeal. (at p154)

ORDER

Special leave to appeal refused.

Appellant to pay costs.